Published in the Union Leader (8/15/2016)
Q: I have a small business in New Hampshire and have been selling goods to customers in New Hampshire and Massachusetts for several years. How can I start protecting my company’s trademark?
A: It sounds like your company has been around for some time, so the mark has likely already started accumulating rights, at least in your geographic area. Simply applying the mark to a product or using the mark to provide a product/service, creates “common law” trademark/service mark rights, which is the lowest level of trademark protection. Notably, common law trademark rights are limited to the geographic area of use. At this point, you can start using the “TM ” superscript (for trademarks not federally registered; “SM” for service marks not federally registered) to put others on notice of your mark. The mark should be prominently displayed/used on the products themselves and/or the labels, tags, or packaging of the product.
The next level of protection is state registration, which is available in every state. With state registration, your rights will be limited to the particular states in which you register your mark and will provide some limited remedies under state statute that are not otherwise available under common law.
The highest level of protection is federal registration with the US Patent and Trademark Office (USPTO). While an application for federal registration may be filed based on an intent-to-use the mark, in order to complete the registration process, the applicant must satisfy the interstate/foreign commerce requirement. As you stated that you are currently providing goods under the mark to customers in New Hampshire and Massachusetts, you may be able to apply for a federal registration based on actual use. Once registered, you may use the ® sign, permitted only when a mark is federally registered with the USPTO. If properly used and maintained, a federal registration may last in perpetuity.
But before you rush to file your trademark application, you should consider doing some level of trademark searching. Although a trademark search is not required by law in the U.S. prior to adopting a mark and/or filing for registration, it is strongly recommended that you clear/search a mark prior to its adoption. Even though you have begun using the mark in question, a trademark search may still save you a great deal of time, money, and headaches down the road.
A trademark attorney can help you with effective searching and provide a legal opinion regarding the mark’s availability for use and registration. Furthermore, an attorney can assist in determining the scope of your trademark rights, navigating the application processes, and enforcing/maintaining your rights.
Catherine Yao can be reached at [email protected].
Know the Law is a bi-weekly column sponsored by McLane Middleton, Professional Association. We invite your questions of business law. Questions and ideas for future columns should be addressed to: McLane Middleton, 900 Elm Street, Manchester, NH 03101 or emailed to [email protected]. Know the Law provides general legal information, not legal advice. We recommend that you consult a lawyer for guidance specific to your particular situation.